Tuesday, January 4, 2011

Mistake #2 when arguing at the BPAI: Arguing outside the claims

Continuing with my Top 10 Mistakes in Arguing on Appeal to the BPAI, in this post I'll discuss Mistake #2: Arguing outside the claims.

In discussing Mistake #1, I said that the Board is not often persuaded by conclusory assertions and you're more persuasive with a real argument with explanation. However, your argument should stay close to the claim language. Otherwise, the Board may ignore the argument as being outside the scope of the claim.
   Appellants argue (App. Br. 10) that, in contrast to the claimed invention requiring that the processor monitor a stored version of the video transmission, the Spehr reference monitors the actual transmission. According to Appellants (id.; Reply Br. 2), the claimed invention, by monitoring the stored information rather than the actual transmission, makes it easier to adjust another channel.
   We find Appellants' argument to be unpersuasive as it is not commensurate with the scope of claim 1. It is our opinion that Appellants’ argument improperly attempts to narrow the scope of the claim by implicitly adding disclosed limitations which have no basis in the claim. See In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). We find nothing in the language of claim 1 which requires monitoring the stored version of the video transmission. 
(Ex parte Cormack.)

   Appellants merely contend that Folegnani fails to disclose “to dynamically adjust the size of the monitoring period” without providing and supporting reasoning why. Furthermore, the Examiner found that this argument is not commensurate with the scope of claim 33. We agree. Claim 33 recites “wherein said period of time comprises a cycle window that is variable and controllable.” There is no requirement that the monitoring period be dynamically adjusted. Instead, the period of time must be variable and controllable.
(Ex parte Buyuktosunoglu.)

Arguing outside the claims is a bad idea for a second reason: if your patent is asserted, such an argument limits the claim scope through the doctrine of prosecution disclaimer.

Prosecution disclaimer is sometimes referred to as prosecution history estoppel. See my previous post here for an explanation of the difference between the two.

1 comment:

  1. A very nice series, thank you. I'd comment that sometimes one needs to add a short footnote on correct claim interpretation, just to reduce the likelihood of this sort of conclusory blow-off.